Businesses often grow brands with the intention of eventually expanding their global recognition. For non-US based companies the US can be viewed as the largest or next-largest economy for its brand(s) to grow. As a result, the number of new trademark applications filed in the US Patent & Trademark Office (USPTO) has expanded significantly over the past few years. A large percentage of new US trademark applications are filed without proving use in commerce in the US at the time of filing. And, while there are several methods of filing new US trademark application without proof of US use in commerce, a commonly chosen track for non-US applicants is via section 44 of the Trademark Act, which references a previously filed foreign application or issued foreign registration. Section 44 can also be further explained in section 1000 of the Trademark Manual of Examining Procedure. This article will seek to provide a clear and concise explanation of this complex and often misunderstood way to file a US trademark application based on rights which have already been pursued outside the US.
There are two basic types of section 44 applications: (a) 44(d) applications claim priority to a foreign filed application; and (b) 44(e) applications claim ownership of foreign registrations. In an application based solely on section 44, the applicant must submit a verified statement that the applicant has a bona fide intention to use the mark in commerce, but use in commerce is not required prior to registration. Alternatively, an application may file with a claim section 44 in addition to traditional 1(a) use-based or 1(b) intent-to-use as a filing basis. In either case, the requirements of each basis must be met at the time of filing.
One primary drawback of relying on section 44 is that the US trademark must exactly match the foreign mark being referenced. If even a small modification is made to a mark including the addition of extra words or small changes to the graphic, the trademark will not be considered eligible for filing under section 44 by the USPTO. Another requirement for a section 44 filing is that the scope of goods and services in the application is not allowed to exceed the scope established by the foreign trademark, however. An applicant, however, can narrow a foreign trademark’s scope when applying for a trademark in the United States.
Section 44(d) allows an applicant to file a new US application and claim priority to an earlier filing date of a foreign trademark application filed less than six months prior to the US filing. Importantly, the foreign application relied upon must be the applicant’s first application filed in any treaty country for the same mark and for the same goods or services. As a result, a claim under 44(d) cannot be based on a foreign application for a trademark if that same trademark was previously filed in another application for the same goods and services. Additionally, section 44(d) filing is not a basis for publication or registration, and prior to any publication or registration of a 44(d) application the applicant must show a basis for registration or publication under section 44(e), 1(a) or 1(b). In fact, unless a section 44(d) applicant specifically states that it does not intend to rely on a foreign registration as a basis, the USPTO will assume this is the applicant’s intention and will suspend the application after substantive examination, pending registration of the foreign application.
An applicant is able to utilize a section 44(e) filing basis when a valid foreign trademark registration already exists for both the same trademark as well as the same scope of goods and services. An applicant may not file an application under 44(e), or amend an application to add or substitute a 44(e) basis, before the registration in the applicant’s country of origin has issued. In a 44(e) application, the examining attorney will not suspend the application pending submission of a copy of the foreign registration, except under extreme circumstances. However, section 44(e) requires submission of “a true copy, a photocopy, a certification, or a certified copy of the registration in the country of origin of the applicant.”